Duarte Y Beltran SA v. OHIM(CFI (Second Chamber); T-353/02; 13.4.05) (Judgment not in English at the time of writing)
The application for INTEA (word mark) in Classes 3 and 21 for amongst other products shampoos, cosmetic products, soaps, combs, brushes etc was opposed by the proprietor of two earlier marks for INTESA registered for goods in Classes 3 and 21 amongst others. The Opposition Division partially allowed the opposition on the grounds that, under Article 8(i)(b), there was likelihood of confusion between the marks in relation to goods in Class 3. The Board of Appeal dismissed the appeal.
The CFI upheld the decision of the Board of Appeal: the signs were visually similar as they only differ in the letter "S"; phonetically, the marks were similar in the various languages of countries where the earlier mark was registered, in particular, in Finnish, Greek, Italian and Swedish (the fact that the signs were pronounced in a slightly different manner in English was not relevant as it was sufficient that there was a risk of confusion in several other European languages); and finally, there was no conceptual similarity, despite the fact that the word "intesa" means contract in Italian but does not have any meaning in any of the other relevant languages however, the CFI criticised the Board of Appeal for finding that the meaning of the word "intesa" in Italian was irrelevant because of the other national registrations were that word had no meaning because only the earlier Italian registration covered Class 21 and the products covered by the application in Class 21 were neither identical nor similar to the products covered by Class 3 in the earlier registrations).
The Gillette Company v. OHIM(CFI (Second Chamber); T-286/03; 13.4.05) (Judgment not in English at the time of writing)
Gillette’s application to register the figurative mark XTREME RIGHT GUARD SPORT in Class 3 for goods including non-medicated preparations for use in the bath or shower, anti-perspirants and deodorants was opposed by Wilkinson Sword on the basis of four of its German registrations for the word mark XTREME and for three figurative marks all incorporating the words WILKINSON SWORD XTREME registered in Class 3 for shaving products. The Opposition Division rejected the opposition on the ground that the conflicting signs were sufficiently different and that there was no likelihood of confusion under Article 8(i)(b). The Board of Appeal allowed Wilkinson Sword’s appeal on the basis that, XTREME being the dominant element of the conflicting marks, there were similarities between the application and two of the earlier marks, as well as a high degree of similarity between the products such that there was a risk of confusion.
The CFI upheld the decision of the Board of Appeal. The relevant public was the average German consumer who would not pay a high level of attention when purchasing such products. Since the parties’ products belonged to the same family, they could easily be considered as part of a general range of cosmetic products and could be perceived as sharing the same commercial origin.
The CFI noted that since consumers generally decide to purchase such products based on what they see on shop shelves, visual similarity was of greater importance in the global appreciation of the similarity of the marks than conceptual and phonetic similarity. The signs were visually similar because of the similar presentation of the dominant element XTREME due mainly to: (1) the larger size of that term in relation to the other elements of the marks; (2) its central position; (3) the relatively large size of the letter X; and (4) the emphasis placed on the XTREME element. The CFI further held that the element XTREME had the most distinctive character, since the other components played a secondary position and were descriptive of the products in question or indicated the general range of products to which those goods belonged, and that there was therefore a high degree of conceptual similarity between the signs. The marks were also phonetically similar because of the dominance of XTREME.
Reemark Gesellschaft fur Markenkooperation mbH v. OHIM(CFI (Second Chamber); T-22/04; 4.5.05)
Bluenet’s (previously BMG Music) application for WESTLIFE in Classes 9, 16, 25 and 41 was opposed by Reemark on the basis of its earlier German and international registrations for WEST. The Opposition Division, considering the opposition on the basis of the German mark only, rejected Bluenet’s application under Article 8(i)(b). The Board of Appeal allowed Bluenet’s appeal because, although the goods and services concerned were partly similar and partly identical, there was a low degree of visual and aural similarity between the signs and only a certain degree of conceptual similarity such that the marks could coexist.
The CFI allowed the appeal and annulled the decision of the Board of Appeal. The CFI held that the addition of “life” to “west” was not sufficient to distinguish the two conflicting marks significantly on a conceptual basis. Since both marks would be perceived as evoking Western goods or services in the case of WEST or as pertaining to a Western lifestyle in the case of WESTLIFE, they both had similar connotations, which entailed a degree of conceptual similarity. Concerning aural similarity, the CFI found that only some of the consumers would pronounce the “west” element of WESTLIFE in the English way. In these circumstances, there was a degree of aural similarity between the two marks. The CFI was also satisfied that there was a degree of visual similarity between the marks because the earlier trade mark WEST was the first component of the mark applied for and because the average consumer relying on his imperfect memory of the marks could confuse them.
The CFI referred to Oriental Kitchen v. OHIM (T-286/02) where the application contained the earlier mark and it was held that, where those words taken together or in isolation, had no conceptual meaning for the public concerned, the marks at issue, each considered as a whole, were normally to be regarded as similar under Article 8(i)(b). The CFI was satisfied that the marks were confusingly similar.
Chum Ltd v. OHIM(CFI (Fourth Chamber); T-359/02; 5.4.05)
Chum’s application to register STAR TV in Classes 38 and 41 was opposed by Star TV AG on the basis of its international figurative mark STAR TV and the design of a star registered in the same classes. The Opposition Division allowed the opposition under Article 8(i)(b). The Board of Appeal dismissed Chum’s appeal and the CFI upheld the decision of the Board of Appeal.
In relation to the relevant public, the CFI rejected Chum’s submission that the services to which its trade mark application related were directed at the general public whilst those covered by the earlier mark were directed at a more specialised group. For all the services concerned, except the distribution of television programmes, the relevant public consisted of average consumers in the Members States in which the opponent’s international trade mark was protected, namely Germany, Austria, the Benelux countries, France and Italy. In relation to the services associated with the distribution of television programmes referred to in the application and falling under Class 41, the relevant public was a public consisting of professionals working in the audiovisual and television broadcasting sectors, who were likely to be especially interested and attentive when choosing a supplier. The CFI was satisfied that despite the differences in description, the services in question were in part identical and in part similar.
The CFI rejected Chum’s argument that the essential difference between a word mark and a figurative mark precluded any comparison of the two marks from a visual point of view. The words “star TV” formed the dominant element of the earlier mark. Accordingly, given that the mark claimed was identical to the dominant verbal element of the earlier mark, the Board of Appeal was correct in finding that there was a high degree of visual similarity between the two marks (Matratzen Concord v. OHIM – Hukla Germany (T-6/01) followed). The conflicting marks were also conceptually similar in the sense that they both evoked the same idea of a film star. Indeed, even if the average consumer in Members States such as Germany, Austria, the Benelux, France and Italy did not necessarily know the meaning of the English word “star”, that word was in current usage in those countries to describe a film star. Thus, both marks evoked the idea of a film star.
Celltech R&D Ltd v. OHIM(CFI (Third Chamber); T-260/03; 14.4.05)
The application for CELLTECH in Classes 5, 10 and 42 was rejected by the OHIM examiner. The Board of Appeal dismissed the applicant’s appeal and held that pursuant to Article 7(1)(c), CELLTECH could not be registered since it was such as to be immediately and unambiguously perceived as a term designating activities in the field of cell technology and products, apparatus and equipment used in connection with or resulting from those activities. The Board of Appeal further found that CELLTECH lacked distinctiveness under Article 7(i)(b).
The CFI allowed the appeal. When the Board of Appeal and OHIM assessed whether CELLTECH, taken to mean “cell technology”, was descriptive of the goods and services concerned, they both failed to explain in scientific terms the meaning of cell technology. Moreover, neither the Board of Appeal nor OHIM explained in what way those terms gave any information about the intended purpose and nature of the goods and services referred to in the application. Finally, the Board of Appeal also failed to show that the relevant public would immediately make a definite and direct association between the pharmaceutical goods and services claimed and the meaning of the word mark CELLTECH. Even if the goods and services concerned could be used for functional purposes involving cell technology, that fact would not be sufficient to establish that CELLTECH could serve to designate their intended purposes.
Reporter’s note: I am grateful to my colleagues at Bird & Bird Cristina Garrigues and Brigitte Gratton for helping me with the preparation of this month’s report.
All CFI and ECJ decisions can be found at http://curia.eu.int/en/content/juris/index.htm.
New Procedures Governing Revocation Actions before the Office
Tribunal Practice Notice (TPN 1/2005) went live on 25 April 2005. It contains a number of changes and clarifications in the Office procedures governing revocation actions for non-use under Section 46 of the Trade Marks Act 1994 (as amended). One of the most important changes relates to the pleading of the dates from which the applicant claims the revocation should take effect. The Office will accept up to three dates and no more. The TPN has been drafted in response to a number of decisions by the Courts and the Appointed Persons.
An applicant for revocation of a trade mark for non-use must commence proceedings on Form TM26(N). This form was changed in July 2004 in response to the criticisms of the previous form made by Mr Justice Jacob (as he then was) in Omega SA v. Omega Engineering Inc  EWHC 1334 (Ch). The applicant now has to state:
- whether the application for revocation is based on Sections 46(1)(a), 46(1)(b) or both (box 5)
- where the application is based upon Section 46(1)(b), within what 5 year period the mark has not been used (box 6); and
- what date revocation should take effect (box 7).
The new TPN requires that these boxes be completed. Entering text such as “see attached statement of case” in boxes 6 and/or 7 will be regarded as a failure to complete the form correctly.
The earliest date for revocation is 5 years after the date of completion of the registration process or 5 years after the date of conferral of protection in the case of trade marks on the International Register which have been extended to the United Kingdom (see Section 46(1)(a) and the decision in George Lowden v. The Lowden Guitar Company Ltd  EWHC 2531 (Ch)).
(As an aside, in the recent Blockbuster case, the Svea Court of Appeal in Sweden considered the meaning to be given to “completion of the registration procedure” in paragraph 25a of the Swedish Trademarks Act (implementing Article 12.1 of the Trade Mark Directive) and decided that a registration procedure should be considered as completed by reference to the expiration date of the opposition period and not by reference to the registration date. Blockbuster has filed a petition for leave to appeal to the Swedish Supreme Court and, as a result, the decision has not yet gained legal force.)
The new TPN states that one, two or all three of the following possible dates may be made on Form TM26(N):
- under Sections 46(1)(a) and 46(6)(b), the date 5 years after the completion of the registration process or 5 years after the date of conferral of protection;
- under Sections 46(1)(b) and 46(6)(a), the date of application for revocation (which must be at least 5 years after the completion of the registration process or 5 years after the date of conferral of protection);
- Under Sections 46(1)(b) and 46(6)(b), another date based upon a 5 year period entered in box 6.
If the applicant wishes to claim any further dates and rely upon any other alleged period of non-use a separate application must be filed (and fee paid). Applications containing more than three dates or dates rolling backwards in a series of months will be returned to the applicant. Unless the form is correctly filled in, the application will not be admitted or served.
In making these rules, the Office seeks to strike a balance between the competing interests of the applicant and the proprietor. The latter needs to know what case it has to answer and therefore the former should set out the date it wants the mark revoked from and the grounds for revocation at that date. Despite the fact that the applicant is hampered by its lack of knowledge, what the Office will not allow is it shifting the burden on to the proprietor to specify the date at which it last used the mark.
The new TPN also deals with a number of other matters.
- The date on which Form TM26(N) is sent to the registered proprietor by recorded delivery is the start of the 3 months within which the proprietor has to file a defence under Rule 31(3). In the event that the package is returned to the Registry, it will be resent via normal mail. The date for filing the defence will not be reset. The onus firmly rests with the registered proprietor to ensure that the relevant details attached to their registration are correct (applying the decisions of the Appointed Person in Coggins v. Skjelland Group AS, BL O-340-04 and Applied Technologies Manufacturing Ltd v. Apple Projects Ltd,BL O-348-04).
If during the 3 months allowed for the proprietor to file its defence, the applicant requests that the factual basis for the application for revocation be amended then the period for filing the defence will be reset. This does not apply to the correction of clerical errors such as names and/or addresses (the Lowden case applied).
The defence filed by the proprietor must include sufficient evidence to show that it has an arguable case (see for example the Hearing Officer’s decision in Groupement Carte Bleu v. CB Richard Ellis, BL O-586-01).
In the event that the proprietor fails to file a defence, the Registrar will write to the parties giving them 14 days within which to either request a hearing or to provide a submission stating why the discretion given to the Registrar under Rule 31(3) to treat the proprietor as not opposing the application should or should not be exercised. Missing the date for filing the defence through an administrative error will not constitute sufficient grounds for exercising discretion in favour of the proprietor (the Lowden case applied).